Global patent law update - November 2020

Australia

On 1 October 2020 some fees were increased. Of significance is the renewal fees payable for extended term patents. For the five years that a patent term may be extended, the total of the renewal fees was AUD12,750. The new total is AUD30,000. Renewal fees were increased as well for fees payable from the 5th to 19th anniversary.

Fee increases will also apply to patent applications with excess claims. The current excess claim fee of AUD110 for each additional claim over 20 has been replaced with a stepped fee structure of AUD125 for every claim over 20 claims but less than or equal to 30 claims, and AUD250 for every claim over 30 claims.

Brazil

On 1 October 2020, an initiative by the Brazilian Patent and Trademark Office (BPTO) to facilitate the technology transfer and the licensing of intellectual property assets the “IP Window” came into force. The IP Window project allows owners to offer their pending applications or granted patents by the BPTO, by publishing them in a platform specially developed for the purpose. Thus, interested parties may readily identify patent assets available for sale or licence.

The application for publication in the IP Window should be filed by patent applicants or owners or an authorised attorney. A declaration confirming that the patent is not subject to any exclusive license agreement will be a requirement. On receiving an application, the BPTO’s International Affairs General Coordination (CGAI) will determine compliance and either publish the application or issue an official action.

Canada

Substantial changes to the Patents Act came into force on 30 October 2019. An important change was the deadline for entering the Canadian national phase of a Patent Cooperation Treaty (PCT) application. Under the previous Act, a PCT application could enter the Canadian national phase up to 42 months from the earliest priority date as a matter of right.

Under the new provisions, if the international filing date is on or after 30 October 2019, an application may still enter the national phase up to 42 months from the earliest priority date. But if the application enters the national phase more than 30 months from the earliest priority date, a request for reinstatement must be filed along with a statement that the failure to meet the 30 month deadline was unintentional. That is, late entry is no longer “of right”. Assuming a PCT claims the regular 12 month priority, this change will apply to such national phase applications to be filed from May 2021.

The Canadian Intellectual Property Office has released new guidelines on patentable subject matter including examples relating to medical diagnostic methods, medical uses and computer-implemented inventions. The guidelines can be found here.

Chile

In July 2020 Chile joined the Global Patent Prosecution Highway (GPPH). This allows national patent applicants to request accelerated examination at any of the 27 national offices of other member countries, provided that a member office has found at least one allowable claim. The requirements for participation in Chile are as follows:

• The Chilean patent application for which the PPH is requested must have the same filing date or the same priority date as the application at the Office of Earlier Examination (OEE).
• The corresponding application in the OEE must have at least one or more claims that have been found patentable.
• All the claims in the application must be sufficiently equivalent to one or more of the claims that have been established as patentable by the OEE.
• The Chilean patent application must have been published.
• Substantive examination of the application in Chile must not have started at the time the PPH request for examination is filed. Substantive examination starts when the examiner is appointed; not when the office action is issued.

China

According to Presidential Order No. 55 on 17 October 2020, the newly revised “Patent Law of the People’s Republic of China” will enter into force on 1 June 2021. At this time the relevant implementing rules and administrative regulations have not been promulgated. However, the most significant changes are a Patent Term Extension (PTE) regime and a system of patent linkage for drug related patents.

It is proposed that PTE shall not exceed five years, and the total effective patent term after the new drug is approved for marketing shall not exceed 14 years. The details of the patent linkage system are yet to be announced. Other measures include:

• Design patent term extended from 10 to 15 years.
• Designs patents may cover part of a product.
• Ineligible subject matter expanded to nuclear transformation process per se.
• A system of Patent Term Adjustment (PTA) whereby after the expiration of four years from the filing date and three years from the requesting date for substantive examination, a PTA shall be provided for unreasonable delay. Excluded is any delay due to the applicant during the grant process.

Colombia

From 25 September 2020 a divisional from a divisional is not allowed. Furthermore, a divisional application cannot cover the same subject matter included in the claim set of the parental application.

Europe

The Enlarged Board of Appeal (EBA) has decided in G 3/19 that the term "essentially biological processes for the production of plants or animals" in Article 53(b) EPC is to be understood and applied as extending to products exclusively obtained by means of an essentially biological process or if the claimed process feature defines an essentially biological process. That is, European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.

G3/19 is the sixth EBA decision which addresses the interpretation of Art. 53(b) EPC:

European patents shall not be granted in respect of:
(b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof;

Article 4 of the Biotech Directive ( Directive 98/44/EC ) mirrors the wording of Art. 53(b) EPC but does not state whether plants or plant material (fruits, seeds, etc.), or animals/animal material obtained through essentially biological processes are patentable.

It is apparent that in this decision, the Enlarged Board has abandoned its earlier interpretation of Art. 53(b) EPC in decisions G 2/12 and G 2/13. This resulted from the introduction of new R. 28(2) EPC, which allows for a dynamic interpretation of Art. 53(b) EPC. That is the meaning of a provision may change or evolve over time.

This new interpretation of Article 53(b) EPC has no retroactive effect on European patents which were granted before 1 July 2017 when Rule 28(2) EPC entered into force. Nor on pending European patent applications having an earlier priority date.

India

Patent Amendment Rules came into effect on 20 October 2020. New rule 21(1) requires that if an applicant has not complied with rule 17.1 of the PCT regulations, the priority document must be filed on national phase entry (within 31 months from the priority date). If the priority document is not in English, new rule 21(2) requires a translation to be filed in the same time frame. Under new rule 21(3), non-compliance with rules 21(1) & 21(2) will result in an invitation to file within three months of the invitation.

Under Indian law, a Statement of Working must be filed for each in force patent on an annual basis. Rule 131(2) has been amended to change the time limit for submitting the annual Statement of Working (Form 27). The new rule requires Form 27 to be submitted within six months from the date of expiry of each financial year (not calendar year), i.e., year ending 31 March. Thus, the Form 27 for the previous financial year must be filed by 30 September of the subsequent financial year.

The new Form 27 has been simplified:

• Allowing the patentee to provide the “approximate” (instead of exact) amount of revenue earned or value accrued by way of manufacturing in India or importing into India.
• Allowing the submission of information in respect of multiple “related” patents, in cases where the approximate revenue/value accrued from a particular patented invention cannot be derived separately from that of the related patents, provided all such patents are granted to the same patentee.
• Providing a space for a patentee, if desired, to offer an explanation regarding working or non-working of the patent.
• Requiring every patentee and every licensee (exclusive or otherwise) to submit Form 27 for a given patent (or a bunch of related patents owned by a single patentee). Joint owners may file one single form.
• An authorised agent is permitted to sign the Form 27 on behalf of the patentee/licensee.

New Form 27 no longer requires:

• Statement from the patentee/licensee as to whether the public requirement of the patented invention has been met partly/adequately/to the fullest extent or not.
• Details of licenses and sub-licenses granted during the year.
• Details of importation by country.

Italy

For PCT applications filed on or after 1 July 2020 it is now possible to enter National Phase directly into Italy.

Korea

From December 2020, the Korean Patent Act will provide for the recovery of damages in situations where the quantity of products sold by an infringer exceed the patentees manufacturing capacity. Under the current Act, damages are calculated as patentees production capacity x profit per unit product. Under the revised Act, it is proposed that damages are calculated as:

Patentee’s production capacity x profit per unit product + quantity exceeding capacity x reasonable royalty rate.

As of 14 July 2020, Patent Term Adjustment Reduction due to delayed registration by applicant changed. Applicant delays are applied from the period from the receipt of a Notice of Final Rejection until the conclusion date of continued examination. Previously, the applicant delay period was determined until the date requesting continued examination.

Patents eligible for Patent Term Extension due to pharmaceutical marketing authorisation has been expanded to include psychotropic or narcotic drugs approved pursuant to the Narcotics Control Act.

Laos

It is now possible to extend the rights of a Singaporean patent into Laos. The Singapore patent must meet the patentability requirements in Laos. No official fee is required for the re-registration process. The process involves filing certified copies of the Certificate of Grant and final specifications of the Singapore patent, a copy of the abstract of the Singapore patent, certified Laos translation of the abstract and final specifications of the Singapore patent within six months of the lodgement date, and a Power of Attorney for Laos.

Mexico

From 5 November 2020, the new Federal Patent Law will apply.

Second uses, specifically Swiss-style and product by use claims are now permitted.

When considering double patenting, a patent will be allowed if the scope or the claimed matter is different and the essential technical features have a substantial variation of the matter already protected by the other Mexican patent.

When applying the grace period, if a third party directly or indirectly obtained information from the applicant or inventor and disclosed the matter which is object of the invention, the disclosure will not be considered as part of the state of the art for an application.

Additionally, the publication of an application, patent or register carried out by the MXPTO or a foreign IP office is included in the grace period if the publication was due to an error made by the IP office. Similarly if the application was filed by a third party without authorisation, having obtained the information from the inventor directly or indirectly. It will also be included within the grace period.

Unity of invention will now be recognized where there are a group of inventions that are functionally related in their essential technical features and constitute a contribution to the state of the art. In addition, only the main invention (first claimed) will be examined.

Voluntary divisional applications as per Paris Convention are now formally acknowledged.

When a unity objection is raised, and non-selected matter is eliminated from the scope, it will no longer be possible to bring back the non-selected matter to the pending application.

Divisional applications can no longer be filed from divisional applications unless according to the examiner the second divisional application was necessary or allowable.

Divisional applications must now be filed at the latest, two months after the Notice of Allowance has been issued.

When evaluating inventive step, the relationship between the claimed invention and the document(s) of the state of the art, individually or combined will be considered.

Russia

The Russia Patent and Trademark Office (Rospatent) has tightened its approach to allowing Patent Term Extensions (PTE) to pharmaceutical and agrochemical patents. While it is still possible to obtain a PTE of up to five years, Rospatent requires the patent to be limited to the authorised product only. Therefore claims to uses, methods and vectors etc., that do not directly disclose the authorised product are no longer allowed.

Moreover, broad compound claims that are not capable of being limited to a specific compound because there is no example to the compound will not be granted. Similarly, composition claims will need to be limited in dosage range to that of the authorised product.

Singapore

A new fast track to grant system has been introduced in Singapore which can be used for any field of technology. Under this process it is possible to obtain grant within six months of filing. The applicant is required to state the reason(s) for requesting accelerated examination.

Ukraine

Amendments to the Ukrainian Law on Protection of Rights to Inventions and Utility Models entered into force on 16 August 2020. The most important changes are:

• Patentable subject matter excludes methods of treatment and diagnosis of humans and animals. However, substances or compositions used in methods of treatment or diagnosis are considered patentable subject matter.
• Pre-grant and post-grant oppositions are now permitted. A pre-grant opposition may be filed within six months from the application’s publication date. A post-grant opposition may be filed within nine months from the patent’s publication date. Pre-grant oppositions are to be filed with the Intellectual Property Office. Post-grant oppositions will be considered by the Intellectual Property Office Board of Appeal.
• Supplementary protection certificates (SPC’s) are now harmonised with the EU following EU-Ukraine Association Agreement.

United States of America

On 2 July 2020 the USPTO launched a “Fast-Track Appeals Pilot Program”. The USPTO expects that the average ex parte appeal reviewed under the Fast-Track Appeals Pilot Program will be decided within six months from the date a petition is granted.

On 19 August 2020 the US Patent and Trademark Office issued a guidance memorandum to the Patent Trial and Appeal Board (PTAB) regarding reliance on applicant admitted prior art in a petition for inter partes review (IPR). This memorandum, issued under the Director’s authority provided binding agency guidance regarding interpretation of 35 U.S.C. § 311(b). Namely that the basis for an IPR must be a prior art patent or printed publication, and that statements regarding prior art in the challenged patent cannot serve as the basis for instituting an IPR. Such statements, however, may provide evidence of the general knowledge possessed by a person of ordinary skill in the art, and may be used to support an obviousness argument in conjunction with one or more prior art patents or printed publications.

New patent fees came into effect from 2 October 2020. The US Patent and Trademark Office applied an increase of about 5% to most fees. These include US patent application fees, PCT application fees, international stage application fees, design application fees, post-grant procedures fees, and maintenance fees.

Some fees have been significantly increased, including issue fees (20% increase for utility and reissue issue fees), request fee for expedited examination of a design patent application (78% increase), and maintenance fee surcharge for late payment within six months (213% increase).